To: | Tesseract Ventures, LLC (ekdkdocket@kcpatentlaw.com) |
Subject: | U.S. Trademark Application Serial No. 88660535 - TESSERACT - 1210.019 |
Sent: | December 16, 2019 04:51:47 PM |
Sent As: | ecom103@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88660535
Mark: TESSERACT
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Correspondence Address: 8900 STATE LINE ROAD, STE. 500
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Applicant: Tesseract Ventures, LLC
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Reference/Docket No. 1210.019
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: December 16, 2019
Introduction
This Office action supersedes the preceding Office action dated December 16, 2019 and incorporates all outstanding refusals and/or requirements. See id.
Applicant must respond to all issues raised in both this and the preceding Office action within six months from the date of this Office action to avoid abandonment of the application. See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §1104.10(a).
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
Search for Conflicting Marks
Identification of Goods/Services
The identification of goods is indefinite and must be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend the identification to specify the common commercial or generic name of the goods. See TMEP §1402.01. If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses. See id.
The identification of services is indefinite and must be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend the identification to specify the common commercial or generic name of the services. See TMEP §1402.01. If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language. See id.
Specifically, the language relating to robot is indefinite and must be clarified. The dictionary definition of robot is a machine capable of carrying out a complex series of actions automatically, especially one programmable by a computer or a machine resembling a human being and able to replicate certain human movements and functions automatically. http://www.lexico.com/en/definition/robot
As a general rule, robots are classified based on their function. In practice, robots are generally classified as machines in Class 7 or as computers in Class 9, except when the robots have specialized functions, e.g., surgical robots in Class 10, toy robots in Class 28.
In this case, if the goods are humanoid robots with artificial intelligence or robots with artificial intelligence, then the ID should indicate it, the intended use should be clarified, and the goods should be classified in Class 9, e.g., Humanoid robots with artificial intelligence for scheduling, arranging, and providing information in association with business meetings.
The wording “scheduling, arranging and providing information in association with meetings” is ambiguous. The wording is unclear because it could include various functions, e.g. reminders to attendees about the scheduled meetings, computer programming information for software developer meetings, safety information for police officer meetings. Although the ambiguity is not significant for humanoid robots with artificial intelligence, the vague wording creates ambiguity as to the intended use of the goods.
If the goods do not incorporate artificial intelligence to perform their functions, then it may not be accurate to characterize the goods as “robots,” see dictionary definition. It may be accurate to describe the goods as computer hardware and software in Class 9. The applicant could adopt the following, for example, if accurate:
Robotic computer hardware sold with integrated computer software for scheduling business meetings in Class 9
Additionally, all software in Class 9 must indicate whether the software is recorded or downloadable.
The wording “providing robots” in Class 043 is indefinite, because it is unclear if applicant is renting out robots (Class 042), manufacturing robots (goods class such as Class 009, 007), custom manufacturing robots (Class 040).
Applicant may adopt the following wording, if accurate:
Class 009 Downloadable software which allows users to participate in meetings and classes; Robotic computer hardware sold with integrated computer software for scheduling business meetings
Class 042 Rental of robotic computer hardware sold with integrated computer software for scheduling business meetings; computer services, namely, hosting online web facilities for others for organizing and conducting meetings, events and interactive discussions via communication networks; rental of server memory space for hosting electronic bulletin boards, electronic meeting room, and chat room via computer communication network
Class 043 Rental of meeting rooms; Rental of rooms for social functions; Rental of conference rooms; Providing conference rooms via a member club service; Providing facilities for conferences and meetings
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
Significance of Wording
The examining attorney requires information about the goods/services and/or the mark to determine whether all or part of the mark is merely descriptive as applied to the goods and/or services. TMEP §814. Applicant must specify whether the wording “TESSERACT” has any significance in a foreign language, as a geographic location, in the robotic or computer trade or industry, or as applied to the goods/services described in the application. 37 C.F.R. §2.61(b).
Trademark Rule 2.61(b) states “[t]he examiner may require the applicant to furnish such information and exhibits as may be reasonably necessary to the proper examination of the application.” The Trademark Trial and Appeal Board has upheld a refusal of registration based on the applicant's failure to provide information requested under this rule. In re Page, 51 USPQ2d 1660 (TTAB 1999)(failure to comply with request for information constitutes grounds for refusal); In re Babies Beat Inc., 13 USPQ2d 1729 (TTAB 1990)(failure to submit patent information regarding configuration).
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.
How to respond. Click to file a response to this nonfinal Office action.
/W. Wendy Jun/
W. Wendy Jun
Examining Attorney
Law Office 103
wendy.jun@uspto.gov
RESPONSE GUIDANCE